Ex Parte Kaus et al

Board of Patent Appeals and Interferences

Dec 12, 2011

10488433 (B.P.A.I. Dec. 12, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/488,433 03/02/2004 Michael Kaus DE 010253 3960
7590 12/13/2011
Daniel J Piotrowski
US Philips Corporation
Intellectual Property Department
P O Box 3001
Briarcliff Manor, NY 10510
EXAMINER
VANCHY JR, MICHAEL J
ART UNIT PAPER NUMBER
2624
MAIL DATE DELIVERY MODE
12/13/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte MICHAEL KAUS, JUERGEN WEESE, and
STEVEN LOBREGT
________________

Appeal 2009-009053
Application 10/488,433
Technology Center 2600
________________

Before CARLA M. KRIVAK, THOMAS S. HAHN, and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-009053
Application 10/488,433

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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1, 2, and 4-6:
(I) Claims 1, 2, 5, and 6 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Kimmel (US 6,031,935; issued Feb. 29, 2000).
(II) Claim 4 stands rejected under 35 U.S.C. § 103(a) as obvious over
Kimmel in view of Staib (Lawrence H. Staib & James S. Duncan,
Model-Based Deformable Surface Finding for Medical Images, 15
IEEE TRANSACTIONS ON MED. IMAGING 720 (Oct. 1996)).
(III) Claims 1, 2, 4, and 6 stand rejected under 35 U.S.C. § 101 for being
directed to non-statutory subject matter.
We affirm.

THE INVENTION
Appellants describe their invention as follows:
The invention relates to a method of measuring
geometric variables of a three-dimensional structure contained
in an object from at least one image of the object. The
invention also relates to an image processing device for
performing such a method and a computer program for such an
image processing device.
(Spec. 1:1-4).

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Application 10/488,433

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THE REJECTIONS UNDER 35 U.S.C. §§ 102(B) AND 103(A)
CLAIMS 1, 2, AND 4-6
Independent claim 1 is representative of the claims listed above, and
reads as follows:1
1. A method of measuring geometric variables of a three-
dimensional structure contained in an object from at least one
image (Ij) representing the object, comprising the following
steps:
use of a deformable first model (M) describing the
structure, the shape of which model can be described by
parameters (b),
adjustment of the first model to the structure in the image
(Ij),
determination of the parameters (bj,) at which the first
model exhibits optimum conformity with the structure,
use of a deformable second model (M*) describing the
structure, which second model in shape corresponds to the first
model, and which in addition contains at least one geometric
variable,
modification of the second model according to the
parameters determined, and
derivation of the geometric variable(s) from the modified
second model.
The Examiner finds that Kimmel discloses both parameters and
variables expressly and therefore it is unnecessary to ascertain whether there
is a difference between the two terms (Ans. 10). The Examiner also finds

1 In the Appeal Brief filed July 7, 2008 (“App. Br.”), Appellants argue
claims 1, 2, 5, and 6 together as a single group (App. Br. 6-11). Appellants
additionally argue dependent claim 4 under a separate heading (App. Br.
12), but the patentability arguments in this separate section are solely based
upon the patentability of independent claim 1 (id.). We therefore treat claim
1 as representative of claims 1, 2, and 4-6. See 37 C.F.R. § 41.37(c)(1)(vii).
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that (1) a search contour of Kimmel is a deformable second model (id.), (2)
the search contour is modified “according to the a priori information” (Ans.
11 (citing Kimmel, col. 9, ll. 10-17)), and (3) geometric variables, such as
the centroid and average radius depicted in Figure 7, are derived from the
modified search contour (id. (citing Kimmel, Fig. 7; col. 13, ll. 34-42)).
Appellants argue that even if Kimmel discloses parameters and
variables, the Examiner “never explains how [Kimmel’s search contour]
movement relates to ‘parameters determined’” (Reply Br. 3). Appellants
additionally argue that the contours of Kimmel are not equivalent to the
models claimed (App. Br. 9-10). Appellants contend that models “generally
include eigenvectors and are useful in the determination of the shape vector
as described in the filed application” (App. Br. 9).
Appellants’ arguments are unpersuasive. Independent claim 1 merely
requires that the second model be modified “according to the parameters
determined” (emphasis added). The claim language sets forth no specific
relationship required between the parameters and the modification of the
second model. Kimmel discloses search contour boundaries are modified
“largely [as] a function of the training information that was extracted from
the training contour and the a priori information” (Kimmel, col. 9, ll. 13-16).
This functional relationship between “the training information that was
extracted from the training contour and the a priori information” (id.) and the
search contour modification is sufficient to disclose modification of the
search contour according to the training and a priori information. That is,
the search contour, once modified as discussed above, is then used to derive
updated geometric variables, such as a centroid value (Kimmel, col. 27, ll.
44-49).
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We now turn to Appellants’ contention that the contours of Kimmel
are not equivalent to the claimed models because the term, models, generally
includes specific elements. This argument is unpersuasive. Appellants’
contentions are mere allegations. The record contains insufficient evidence
to support the allegation that the scope of the broadly claimed term “models”
must be limited to only those particular models that specifically include
eigenvectors. It is well settled that arguments of counsel cannot take the
place of factually supported objective evidence. See, e.g., In re Huang, 100
F.3d 135, 139-40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed.
Cir. 1984).
For the reasons above, Appellants’ arguments concerning deficiencies
in Kimmel’s teachings are not persuasive. Accordingly, we sustain the
Examiner’s rejection of representative claim 1, as well as claims 2 and 4-62
which are grouped with claim 1.

THE REJECTION UNDER 35 U.S.C. § 101
Claims 1, 2, 4, and 6 stand rejected under 35 U.S.C. § 101 as directed
towards unpatentable subject matter (Ans. 9-10).

2 The preamble of dependent claim 5 recites “[a]n image processing device
for measuring . . . , and having an image processing device for processing
. . . ” (emphasis added). We understand the second recitation of the image
processing device to be referring to the same image processing device that
was initially set forth. However, the second recitation of “an image
processing device” instead of “the image processing device” may raise a
question of whether different image processing devices are being recited.
The Examiner and Appellants should consider this issue upon any future
prosecution of the application.
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The Examiner finds that the processes of claims 1, 2, and 4 do not
transform any underlying subject matter and that the processes are not tied to
another statutory category (Ans. 9). As to independent claim 6, the
Examiner finds that the claim is directed to computer software per se (Ans.
9-10).
Appellants argue that the models recited in claims 1 and 6 describe
three-dimensional structures and, therefore, are electronic signals
representative of a physical object (Reply Br. 5). Appellants contend that
such signals, being representative of a physical object, are patent eligible
subject matter (id. (citing In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en
banc), aff’d sub nom. Bilski v. Kappos, 130 S.Ct. 3218 (2010))).
Appellants’ arguments are unpersuasive. Claim 1 recites no machine
to implement the claimed method steps. Furthermore, claim 1 does not set
forth any physical article, let alone an article that is transformed. That is,
claim 1 merely recites a mathematical algorithm. It is well settled that “the
discovery of a novel and useful mathematical formula may not be patented.”
Parker v. Flook, 437 U.S. 584, 585 (1978) (citing Gottschalk v. Benson, 409
U.S. 63 (1972)).
Turning to independent claim 6, the preamble reads, in part, “[a]
computer program for an image processing device . . . comprising the
following steps” of taking data (e.g., deformable models), and performing
various adjustments and modifications to the data (i.e., changing the data via
mathematical functions). Restated, claim 6 is directed to software per se, a
series of mathematical algorithms without narrowing limitations, e.g.,
implementation on a machine. “Abstract software code is an idea without
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physical embodiment . . . .” Microsoft Corp. v. AT&T Corp., 550 U.S. 437,
449 (2007).
For the foregoing reasons, we find that the Examiner did not err in
rejecting claims 1, 2, 4, and 6 under 35 U.S.C. § 101 as being directed to
patent ineligible subject matter. According we will sustain the Examiner’s
rejection of claims 1, 2, 4, and 6.

DECISION
The Examiner’s decision rejecting claims 1, 2, and 4-6 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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